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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Snap-On Tools Company and Snap-On Technologies, Inc. v. C/Net, Inc.

Case No. 97 C 5803, 1997 U.S. Dist. Lexis 14851 (N.D. Ill. Sept. 19, 1997)

Plaintiffs own the federally registered trademark "Snap-On," which they utilize to sell professional quality automotive and industrial tools and equipment. The principal method used to distribute these products is via dealers, who deliver tools directly to mechanics at their place of business. Plaintiffs operate a website at snapon.com, and have recently begun distributing computer related diagnostic equipment.

Defendant C/Net decided to offer a product designed to facilitate a person's first time connection to, and subsequent use of the Internet. Defendant decided to market this product under the name "Snap! Online." The services offered by defendant includes a website.

Plaintiffs sought a temporary restraining order, enjoining defendant from further use of the logo "Snap! Online" on the ground that such use constituted dilution of a famous mark in violation of the Lanham Act. The court disagreed, and denied plaintiffs' application.

In reaching this conclusion, the court determined that plaintiffs' mark was not famous outside of the automotive maintenance and service industry, which was not the target of defendant's services. Moreover, defendant's use of the mark was not likely to cause dilution of plaintiffs' mark, because it caused neither tarnishment nor blurring. The lack of tarnishment or disparagment was conceded by plaintiffs.

Blurring "involves an injury to a mark's selling power, and occurs when there is a possibility that the senior mark will lose its ability to serve as a unique identifier of the products of the mark owners, due to use of the junior mark."

In this case, the court noted that there was no evidence that defendant's use of the mark would cause confusion in the public -- to wit: the public was not likely to believe that defendant's Internet product offerings were affiliated with plaintiffs' tool business. "While confusion is not required to show dilution, the analysis for "blurring" and that for "confusion" is similar. Blurring occurs when consumers no longer have a single forminat association between a mark and the company or product behind it. Snap-on has not shown such a diluted association or the likelihood it will occur." After analyzing the various factors that a court uses to measure the likelihood of blurring, the court concluded it would not occur and denied plaintiffs' application. In reaching this result, the court relied on the dissimilarities between the services offered by the parties ("dissimilarity in the products covered by the marks at issue points persuasively to the absence of dilution"), the dissimilarities between the physical appearance of the marks, and the fact that defendant's use of the words Snap and Online raised connotations different from plaintiffs' trademarked phrase "snap-on".

The court also considered, in denying plaintiffs' application, plaintiffs' tardiness in seeking relief and the potential harm to defendant from a temporary restraining order, given the extensive advertising that occurred between the date plaintiffs' first learned of defendant's intended use, and the date on which they sought injunctive relief.

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